WASHINGTON UNIVERSITY LAW REVIEW
PATENTING THE UNEXPLAINED
knowledge-is a win-win-win for the patentee, society, and the patent system. For the patentee, mechanistic enablement would justify broad claim scope265 by bolstering statutory enablement266 and the closely-related written description requirement.267 For society, mechanistic enablement would provide more detailed disclosures (which, in turn, would prevent duplicative research efforts and foster more creative activity during the patent term).268 Finally, mechanistic enablement would allow the patent system to better fulfill its goals of promoting technological progress.26 9
But there are several reasons why an inventor may resist disclosing mechanism-even if known. First, as previously discussed, an inventor may want to retain a competitive edge.270 Second, an inventor might fear uncovering potentially harmful information. For example, elucidating how or why a drug works could reveal that it is unsafe.27 1 Such information could devalue the patent or jeopardize FDA approval.272 Third, there is a fear that characterizing an invention or added discussion about it could limit claim scope.273
While I acknowledge these risks, I reiterate that the proposed paradigm would not compel disclosure of mechanistic information.2 74 The inventor would have to weigh the benefits and risks of (non)disclosure, bearing in mind the experimental use defense.275
265. See discussion supra Part IlI.B.
266. For an illustration, see supra Part 11l.B.2(a).
267. See supra note 157 and accompanying text.
268. See supra notes 49 and 260 and accompanying text.
269. See infra note 340 and accompanying text.
270. See supra notes 24 and 142; Steven C. Salop & David T. Scheffman, Raising Rivals' Costs, 73 AM. ECON. REV. (SPECIAL ISSUE) 267, 267 (1983) (discussing the strategy from an economic perspective).
271. Rebecca S. Eisenberg, The Role of the FDA in Innovation Policy, 13 MICH. TELECOMM.
TECH. L. REV. 345, 370 (2007).
272. Sherkow, supra note 121, at 901.
273. See Phillips v. AWH Corp., 415 F.3d 1303, 1315-16 (Fed. Cir. 2005) (en banc) (reaffirming the importance of the written description in claim construction); Benjamin Hattenbach et al., Patent Prosecution Pitfalls: Perspectives from the Trenches of Litigation, 92 J. PAT. & TRADEMARK OFF.
SOC'Y 340, 341 (2010) (explaining that the decisionmaker "will scrutinize the patent, often dissecting nearly every word," as the patent's written description "will be used as a roadmap for understanding the invention, and will be carefully examined for statements that could be asserted as the basis for restrictive (or expansive) claim constructions"); Scymore, Teaching Function, supra note 25, at 635-36 (describing several linguistic pitfalls that the patentee must avoid in order to avoid a narrow claim construction).
274. But there might be other laws, regulations, or doctrines that compel disclosure. See infra note 281 and accompanying text.
275. See discussion supra Part IlI.C.
2019] 741
WASHINGTON UNIVERSITY LAW REVIEW [VOL. 96:707
3. Incorrect Mechanisms
Like any human endeavor, experimental science is susceptible to errors, omissions, inaccuracies, and failures. 276 And just as scientific articles can disclose incorrect mechanisms, so too can patent documents. This can happen for unintentional reasons like poor experimental design, sloppy research technique, or a flawed hypothesis. Post-publication errors in scientific articles are handled through corrective measures like erratum and retraction.2 7 7 Such errors in granted patents are handled through the reissue process.278
Interestingly, most misrepresentations in the scientific literature come from intentional misconduct.2 79 To prevent such behavior in patent law, mechanistic disclosures-like all disclosures-would be subject to the Patent Office's duty of candor and good faith.280 Intentional misconduct (such as deliberately disclosing a fanciful mechanism in order to obtain broad claim scope)281 would bar patent issuance282 or, if the patent has already issued, render it unenforceable.283
276. CHRISTY L. LUDLOW & RAYMOND D. KENT, BUILDING A RESEARCH CAREER 64 (2010).
277. DAVID H. FOSTER, A CONCISE GUIDE TO COMMUNICATION IN SCIENCE & ENGINEERING 287 (2017).
278. Under certain circumstances, the patentee can withdraw an issued patent and submit it for further examination through a reissue process if the patent is deemed defective. 35 U.S.C. § 251 (2012).
One basis for reissue is that the patentee "claim[ed] more or less than he had a right to claim in the patent." Id. Another basis for reissue is that "the disclosure contains inaccuracies." MPEP, supra note
119, § 1402.
279. Ferric C. Fang et al., Misconduct Accounts for the Majority of Retracted Scientific Publications, 109 PROC. NAT'L ACAD. SCI. 17028 (2012); R. Grant Steen, Retractions in the Scientific Literature: Do Authors Deliberately Commit Research Fraud?, 37 J. MED. ETHICS 113 (2011).
280. The Patent Office imposes a duty of candor and good faith on every individual substantively involved in the patenting process-including the inventor, the attorney that prepares the patent application, and the assignee. 37 C.F.R. § 1.56(a) & (c) (2016). The duty exists with respect to each claim in a patent application, until a patent issues or the application is abandoned. Id. § 1.56(a); MPEP, supra note 119, § 2001. The rationale for the duty is that the Patent Office "must rely on [applicants']
integrity and deal with them in a spirit oftrust and confidence." Kingsland v. Dorsey, 338 U.S. 318, 319 (1949). This "requires the highest degree of candor and good faith." Id.; accord Molins PLC v. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995).
281. Inequitable conduct can arise if intentional misconduct (such as a deliberate misrepresentation or omission of material information from the Patent Office) leads the patentee to obtain an unwarranted patent claim. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011) (en banc) (citation omitted). Post-filing experimentation that reveals that a disclosed mechanism is incorrect would require action by the applicant to avoid submission of misleading technical information and a potential charge of inequitable conduct. Sean B. Seymore, Patenting Around Failure, 166 U. PA. L. REv. 1139, 1158-73 (2018).
282."[N]o patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct." 37 C.F.R. § 1.56(a); see also Norton v. Curtiss, 433 F.2d 779, 792-93 (C.C.P.A. 1970) (explaining that a patent cannot issue if there is inequitable conduct).
283. Inequitable conduct is an equitable defense to patent infringement. MUELLER, supra note 160, at 774-75. The Federal Circuit has held that a lack of candor and good faith at the application stage with respect to statutory enablement constitutes inequitable conduct. Bristol-Myers Squibb Co. v.
742
PATENTING THE UNEXPLAINED
IV. POLICY CONSIDERATIONS
All would agree that disclosure of mechanism in the patent document would be ideal-particularly for opaque inventions.2 8 4 Again, the ultimate beneficiary of such disclosure is the public.2" Other researchers could immediately build upon the mechanistic details without having to waste time and resources figuring them out themselves.2 86 Thus, this proposal aligns with the stated policy goals of the patent system and could bridge the disconnect between patent law and scientific norms.